IPBiz

Wednesday, December 31, 2008

Although the patent office rejected Microsoft's application, reports tech news Web site Ars Technica, the company laid out a plan for the future of computing, where bits and bytes are delivered to one's home similar to the way utility companies deliver electricity. Based upon documents available on the patent office's Web site, Microsoft's application lacked sufficient detail in several areas, including descriptions of the service and how it is different from other ideas already issued patents, according to patent examiner Murali Dega. Microsoft has the ability to tweak its application and resubmit. When contacted, the company would not disclose its plans regarding the patent application or the proposed metering service.

The rejection of application "Metered Pay-As-You-Go Computing Experience" (11/766613, filed June 21, 2007) was a non-final, first Office Action mailed Dec. 12, which included rejections for

A method of operating a computer with scalable performance comprising:presenting a catalog of options related to scalable performance of the pay-per-use computer;presenting a price associated with each of the options;receiving a selection of an option from the catalog of options;calculating a total price of operation of the computer corresponding to the selection of the option;configuring the computer to operate in accordance with the selection of the option; andaccumulating charges for operation of the computer according to the total price.

Richard Susskind, author of “The End of Lawyers?”, in his article “Turning to India at break-neck speed” talks about the research conducted by RSG Consulting and the reasons behind increasing business diverted to LPOs.

The report makes the following points:1. 10 of England’s top 30 law firms have outsourced back office functions or legal work to India.2. Although the legal market is evolving at break-neck speed there is a dearth of experience and attrition rates are high.3. Purchasing power of general counsel in India has increased.4. Shift in the attitude of top English firms with respect to outsourcing – resistance weakening considerably.5. Huge difference in salaries meted out to Indian legal graduates by Indian LPO companies and to qualified associates by Wall Street firms.6. Not only law firms but also the clients that they used to serve are outsourcing legal work.

Tuesday, December 30, 2008

Sales of Novartis's blockbuster drug, Diovan, are expected to tumble when the high-blood-pressure pill's patent expires in four years. That puts Joe Jimenez, a former packaged-goods executive tapped to run Novartis's prescription-drug business last year, in the difficult position of finding ways to make up for some $5 billion in annual revenue.

His plan: Instead of the traditional search for a single blockbuster drug, he will invest hundreds of millions of dollars in a new hypertension pill called Tekturna; speed development of a clutch of new drugs for cancer and other diseases; and expand aggressively in emerging markets to try to spur sales growth there.

***Pharmalivesearch noted: Jimenez joined Novartis in April from Blackstone, the private equity firm, and was previously on the AstraZeneca board and an exec at HJ Heinz. Jimenez' predecessor Tom Ebeling worked at Pepsi.

***Separately, wsj on Humira: A unit of Bayer AG has filed a patent-infringement lawsuit in a U.S. court [ED Texas] against Abbott Laboratories relating to the autoimmune drug Humira, which is Abbott's top-selling product.

Humira is an injectable drug for treating multiple immune system-related diseases, including rheumatoid and other types of arthritis, the intestinal disorder Crohn's disease and the skin condition plaque psoriasis. Abbott has projected that Humira sales will exceed $4.4 billion this year.

***Separately, on Evista

delawareonline noted: "Teva alone has the resources to do these at-risk launches," said Joseph O'Malley, a patent lawyer at Paul, Hastings, Janofsky & Walker in New York who represents makers of brand-name drugs, in a telephone interview. "If they gamble and are incorrect, the lost profits could be catastrophic to smaller companies that don't have Teva's resources."

The company, which often targets patents it contends are obvious variations on existing ideas, has yet to pay damages. Instead, Teva scooped up sales.

Ultimately, this was a close case, especially with regard to the irreparable harm and lack of adequate remedy at law prongs of the four-factor test, in view of past licenses having been granted, and the public interest prong, in light of testimony that the accused product was a medically superior one. Nonetheless, the standard of review, viz., abuse of discretion, compels our decision to affirm the district court.

The bottom line:

For the foregoing reasons, we affirm the decision of the district court to enter a permanent injunction directed to the T2 PHN.

In an earlier post titled Possibilities for USPTO director, IPBiz mentioned some of the names for Director-nominee that were making the rounds. President-elect Obama made an interesting choice for DOE in Chu, but on the other side was LaHood, who has virtually no experience in transportation.

One blog combined this issue with quotes from plagiarist (and politician) Glenn Poshard:

The first time I read the Journal Star’s breaking news article on retiring Congressman Ray LaHood being chosen by President-elect Obama for U.S. Secretary of Transportation, it was all about LaHood being a “moderate” Republican, able to reach across the aisle, yada yada yada, and his being a personal friend of Rahm Emanuel. Conspicuously absent from the article: anything on LaHood’s knowledge of or position on transportation issues.

Now the article has been changed considerably. Gone is any reference to Rahm Emanuel. Included now are quotes from Phil Hare and Glenn Poshard on what a hard worker LaHood is, and how he’s so non-partisan. The only comment about LaHood’s transportation prowess comes from Poshard, who is summarized as saying “LaHood has a comprehensive grasp of the needs of the state and need for a massive infrastructure overhaul nationwide.”

Oh really? (...)

Perhaps as much as a grasp as Poshard had on "background" for his Ph.D. thesis, which background he copied from a book onto page 54 of Poshard's thesis.

One commenter wrote:

Ray LaHood didn’t get the job for his opinions, expertise, experience, or history regarding transportation. Don’t try to figure out what kind of job he will do based on what he’s done in the past. LaHood got the job because Daley couldn’t give it directly to Lipinksi, and the R-LaHood provides great cover for all the money flowing from Obama’s big infrastructure spending plans. There’s lots of money in the Depts of Education and Transportation, especially these days and there will be a lot more soon. With two Daley yes men perfectly in place, and another cutting the budget deals as Chief of Staff.

Welcome to the new style of Chicago politics. Same as the old, suckers.

Meet the new boss, same as the old boss [?]

***Separately, of Bill Richardson, who would be Commerce Secretary (and on top of the USPTO), the LA Times reported:

New Mexico's Gov. Bill Richardson, who is the Commerce secretary nominee in Obama's Cabinet, is being investigated by a federal grand jury in his home state for possibly steering state bond business from the New Mexico Finance Authority toward David Rubin, a significant campaign contributor, according to an NBC News report, among others.

Two former state officials, according to NBC, have recently been questioned about allegations that Richardson or aides pushed state business worth nearly $1.5 million in fees toward CDR Financial Products in 2004. The company is headquartered in Beverly Hills.

This was about the same time that CDR's founder, Rubin, donated $100,000 to two of Richardson's political action committees; mainly it appears to cover expenses of the governor and his staff at the Democratic National Convention in Boston that summer.

Russian academic Igor Panarin's view of a divided US is on wsj online.

Panarin is projecting what "will" happen by 2010.

Fifty years earlier, in 1960, MacKinlay Kantor postulated what would have happened if the South had won the Civil War. Alaska was never purchased by the US, and remained in Russian hands, as Panarin predicts for the future. Texas did become its own entity.

At least the Texas Republic will have a good start on its own patent court, in ED Texas, which may be getting separated from the rest of the world per the recent CAFC decision.

***UPDATE

One reader wrote about a book Slaughter at Goliad: The Mexican Massacre of 400 Texas Volunteers by Jay Stout.One piece of promotional text asserted:

Following a one-sided battle on the prairie near Coleto Creek, 250 mostly American prisoners were marched back to the presidio at Goliad where they were joined by more than 200 others. Subsequently, on orders from President Antonio Lopez de Santa Anna, they were brutally slaughtered on Palm Sunday, March 27, 1836. The loss of so many fighting men in a single day was, at the time, one of the largest in U.S. history.

IPBiz readers may recall the post concerning the battle between General Arthur St. Clair and Little Turtle on September 17, 1791, wherein 623 American soldiers died, which is roughly the combination of deaths at Goliad AND Little Big Horn. See for example Early America's Bloodiest Battle [which notes: In relative terms, some historians have called it the country's worst military defeat ever because it left the United States with a total army of about 300.] In terms of political significance, the investigation by Congress of this debacle was the first Congressional investigation of an executive branch action. Whatever happened at Goliad, it was chump change to what happened on the Maumee River, both in terms of deaths and political significance.

See http://ipbiz.blogspot.com/2008/10/bodog-scalped-by-cafc.html

[Apologies to Mr. Stout for not clearly distinguishing the reference to Little Turtle's battle from the battle of relevance to bodog, and most of the IP theme. Nevertheless, it remains true that Little Turtle and his men killed more American soldiers than Americans (who were not soldiers fighting under the US flag) died at Goliad.]

In passing, IPBiz has to note Abraham Lincoln's "spot resolution", a copy of which is enshrined in Chapultepec Castle in Mexico City.

Also, in passing, recall the trial, in the US, of Aaron Burr, arising from his filibustering expedition. The US did not take well to armed men trying to set up shop in the US.

The district court is directed to vacate its September 10, 2008 order and to transfer the case to the United States District Court for the Southern District of Ohio.

In the CAFC matter, the CAFC relied on the VW case to grant a writ of mandamus (remember Marbury v. Madison?), with the CAFC writing:

There is no easy-to-draw line separating a “clear” abuse of discretion from a “mere” abuse of discretion in all cases. Volkswagen II, 545 F.3d at 310. Nevertheless, we conclude that TS Tech has met its difficult burden of demonstrating a clear and indisputable right to a writ. As in Volkswagen II, the district court clearly abused its discretion in denying transfer from a venue with no meaningful ties to the case. In granting mandamus, the en banc Fifth Circuit found that the court’s denial of transfer was a clear abuse of discretion because it (1) applied too strict of a standard to demonstrate transfer, (2) misconstrued the weight of the plaintiff’s choice of venue, (3) treated choice of venue as a § 1404 factor, (4) misapplied the forum non conveniens factors, (5) disregarded Fifth Circuit precedent, including the 100-mile rule, and (6) glossed over the fact that not a single relevant factor favored the plaintiff’s chosen venue. Id. at 318. Because the district court’s errors here are essentially identical, we hold that TS Tech has demonstrated a clear and indisputable right to a writ.

Yalin would know. The United States Patent & Trademark Office in March granted Yalin and a slew of collaborators, including EECL co-director Bryan Willson, a patent on technology replacing traditional sparkplugs with lasers in large, high-pressure natural gas engines.

The article also mentions the Bayh-Dole Act:

In 1980, Congress passed a law, the Bayh-Dole Act, that effectively required universities to be more aggressive at shepherding their inventions into the marketplace.

The basic theory behind that law is that capitalism is the best way to separate useful discoveries from those that are simply interesting.

"There's an inherent value in basic research, in advancing knowledge. That's what most scientists come into the work thinking about. But that having been said, we work in a land-grant institution that is all about education and research and outreach," said Bill Farland, CSU's senior vice president for research and engagement.

One may question whether the Bayh-Dole Act "required" the universities to be more aggressive. It was permissive.

Of nuts and bolts of IP at CSU, the article noted:

Over the years, CSU has fostered a culture where researchers are encouraged to work on real-world solutions to problems, according to multiple researchers and administrators. They see it as a natural outgrowth of the land-grant mission.

CSURF contracts with CSU to help manage the invention process. CSURF and its subordinate CSU Ventures, works with researchers to identify promising developments, checks to see if anyone else has patented similar technology, then works through the patenting process, which can take years and hundreds of thousands of dollars.

Once a patent is granted, CSURF and CSU Ventures work to find a private business or other entity interested in licensing the technology for practical application.

"We assist in the process of extracting knowledge from the university," said Mark Wdowik, who heads up technology transfer and commercialization activities on behalf of CSU. "Part of the problem of turning the innovation into a product is that it's a long process. The faster we can push it out, the faster market forces can come to bear."

Money that comes in from licensing inventions is split four ways: 40 percent to CSURF for legal and other support, 35 percent to the inventor, 15 percent to Farland's office, and 10 percent to the college or department where the research came from.

**And, something new-->

But starting next year, there'll be a new twist. Wdowik is starting a venture-capital fund to invest in CSU-affiliated research.

The fund's investors will be kept private, as will their investments. Individuals will be able to buy in for $50,000, and companies for $100,000, Wdowik said.

"If we can put some money in ... then we push that (research) out into the marketplace faster," he added. "It's an avant-garde approach."

MarketWatch reports: Cree, Inc. , a leader in LED lighting, announces that Cree and Boston University have agreed with Bridgelux, Inc. to settle the parties' patent infringement litigation and to dismiss all claims and counterclaims in the suits.

Whether the tech giants that make up the so-called and horribly mis-named Coalition for Patent Fairness want to admit it or not, they are the problem and the reason that there is no hope for patent reform.

When the Coalition could not win on apportionment of damages, they walked away from negotiations. Other reforms were there for the asking.

At the time of the death of S. 1145, there was already concern about the economy. ["This is not a risk that the Senate should take at a time when we need to do all we can to support innovative, growth-oriented American industries and a fragile U.S. economy."] Now, the situation is far worse than it was when S. 1145 died. Patent reform is not now a "top of the list" item, expecially when its impact on the economy is murky.

Sunday, December 28, 2008

One group of critics has commissioned computer experts with specialised anti-plagiarism software to scour Darwin's book, published in 1859, for similarities to a paper released the year before by Alfred Russel Wallace, a naturalist who worked for eight years in what he termed the Malay Archipelago - primarily Indonesia and Malaysia.

Initial indications are that the analysis will show some of the most important ideas in On the Origin of Species were taken from Wallace -- in particular the idea that species with variations helping them to survive would thrive and pass on these features to their offspring.

On Jan. 14, The Brookings Institute, the Computer and Communications Industry Association and Duke University will co-host a daylong symposium on software and business method patents post-Bilski, entitled “The Limits of Abstract Patents in an Intangible Economy.”

A post at OS News On the suit by Cygnus over US Patent 7346850 - "System and method for iconic software environment management" begins:

Large multinational software companies like Apple, Microsoft, and Google, rarely - if ever - initiate patent infringement lawsuits against other software companies, probably because they themselves infringe on lots of patents too.

The comment thread indicated that OS News is populated by commenters who understand little about the patent system. Or how to type:

What is getting ridiculous? The fact that all these "trolls" are appearing, or the fact that this does not look like a troll at all and still is (I think misleadingly) referred to as a troll? Look e.g. at Patently-O writer, Dennis Crouch, who puts out a working definition of a patent troll. "The patent troll waits for others to independently develop the patented technology into useful products and to create a market for those products." By "waits for others..." normally is meant that the troll is a "non-practising entity", i.e it does not use the inventions itself. Often the patent rtoll definition referes also to comanies that purchase patents cheap with the sole purpose of suing for big money. I cannot see that Cygnus fits into this category at all?

The thread at OS News did not address the patents that Apple, Microsoft, and Google are getting, or the license deals they are getting from others.

***Claim 1 of the '850 patent states:

A method of accessing one or more computer files via a graphical icon, comprising the steps of:

capturing automatically one or more graphical representations of one ormore portions of information content of one or more computer files while an application is manipulating the one or more computer files;

creating automatically an icon including selected portions of the captured one or more graphical representations of the information content of the one or more computer files wherein the icon graphically depicts at least a portion of the information content from the one or more computer files and wherein the icon is created while the application was manipulating the icon's corresponding one or more computer files and includes selected portions of the captured one or more graphical representations of the information content;

linking the icon to the application and to the one or more computer files based on theability of the application to manipulate the information content of the one or more computer files corresponding to the icon; storing the icon in a memory;

displaying the icon in a window on a display screen;

invoking the application for manipulating the information content of the one or more computer files upon selection of the icon by accessing the more or more computer files by reference to an underlying file system corresponding to the icon and opening the one or more computer files within the application.

General Atomics and SAIC received the contracts from the Pentagon's Defense Advanced Research Projects Agency, or DARPA. It is the military's research and development funding arm and is seeking biofuel alternatives for military aircraft, which make up a significant percentage of the $6 billion the military spends on fuel annually.

A team led by General Atomics of San Diego – a privately held company best known as the maker of the Predator unmanned aircraft – got a $19.9 million grant. SAIC, a wide-ranging defense research and engineering firm also known as Science Applications International Corp., leads a group that received $14.9 million. (...) Some biofuels scientists found the SAIC award puzzling since the company isn't known to have an active biofuels research program.

Of GA partners: General Atomics will work with several partners on its contract, including the Scripps Institution of Oceanography in San Diego, Hawaii BioEnergy in Honolulu and the University of North Dakota's Energy and Environmental Research Center.

Of other companies: Several companies are looking at algae as a potential biofuel locally, most of them small, private firms. One of the larger private companies conducting this research is Sapphire Energy.

Sapphire, which raised $100 million in venture capital from Bill Gates, Arch Venture Partners and others, aims to use a host of means, including possible genetic engineering, to try to produce not just vegetable oil but a more refined biofuel from algae.

This more refined fuel would need little or no additional processing to work. Efforts to reach Sapphire were unsuccessful.

Of Hawaii BioEnergy: Hawaii BioEnergy formed in 2006, bringing together Hawaii landowners Maui Land & Pineapple, Kamehameha Schools and Grove Farm of Kauai in an effort to develop crops that can be converted to energy.

In an incredible comment on the "The Chris Matthews Show" of 28 December 2008, Larry Summers (formerly Prez of Harvard) not only was mentioned as a comeback story for 2008 but also was stated to have been right in his comments about women.

http://ipbiz.blogspot.com/2005/01/summers-and-other-economists-out-of.html ["I felt I was going to be sick," said Nancy Hopkins, a biology professor at Massachusetts Institute of Technology, who listened to part of Summers' speech Friday [Jan. 14, 2005] to a session on the progress of women in academia organized by the National Bureau of Economic Research in Cambridge, Mass. ]

If Hopkins was going to be sick in 2005, imagine her reaction to someone in 2008 saying Summers was right after all.

U.S. General Anthony McAuliffe, who commanded the 101st Airborne troops during the Battle of the Bulge, replied to a German surrender directive this way: “Nuts.”

Although more carefully guarded, the Acushnet Company (Titleist, FootJoy, Cobra) basically is telling Callaway Golf Company the same thing in the companies’ ongoing legal battle regarding golf ball patents.

After a three judge panel of the U.S. Federal Circuit on Dec. 23 denied a request by the Acushnet Company to stay a previously-granted permanent injunction received by Callaway Golf Co. to stop sales of Titleist Pro V1 golf balls Callaway believes infringes on four of its ball patents, Acushnet vowed to fight on and continue the appeal process.

“We firmly believe in our position and will continue to defend ourselves vigorously in the appeal process,” said Joe Nauman, executive vice president, corporate and legal, for Acushnet. “We expect to prevail in having all claims of all four patents at issue determined to be invalid once the appeal is fully briefed and argued.”

In other words, “Nuts,” particularly in light of Callaway Golf’s request to surrender following the Federal Circuit ruling.

Wednesday, December 24, 2008

The Los Angeles Times reported: The Seoul Central District Court found that Dr. Jeong-Hwan Kim had damaged the reputation of Kwang Yul Cha, a fertility doctor and chancellor of a South Korean university with ties to Hollywood Presbyterian Medical Center. Kim was fined $750.

The decision was reached in July 2008. The Times stated:

The court found Kim guilty on July 9, 2008.

The documents related to the case were released by Cha this week. In a written statement, he referred to the verdict as "vindication."

Kim could not be reached for comment.

Kim will have to pay a fine of 1 million South Korean won, which amounts to about $750.

Cha is the chancellor of the Medical School at South Korea's Pochon CHA University. A branch of the university owns Hollywood Presbyterian Medical Center.

Cha had sued California doctor Bruce Flamm over an op-ed written by Flamm which, in part, related to the Cha/Kim publication matter. Cha lost at trial.

**UPDATE. Comment to californiastemcellreport on 10 April 09 -->

The oblique reference to the Cha / Flamm matter is informative to the matter at hand. Flamm's primary concern was with one article co-authored by Cha which involved the impact of prayer on pregnancies through IVF. The Journal of Reproductive Medicine (JRM), which published the study (K.Y. Cha, D.P. Wirth, and R.A. Lobo, "Does prayer influence the success of in vitro fertilization-embryo transfer?" 46:781-787, 2001), not only refused to publish letters critical of it, they refused to even acknowledge their receipt. As months went by the JRM steadfastly refused to respond to e-mails, calls, or letters about the study. Wirth later went to federal prison [on an unrelated matter] and Lobo denied significant involvement in the JRM paper, but the paper remained, unretracted. Flamm got into trouble with Cha primarily for a remark about a DIFFERENT paper co-authored by Cha. See for example http://ipbiz.blogspot.com/2006/04/more-on-bengu-sezen-rogerio-lobo-re.html

The better policy, as David Jensen suggests, is one of open discussion of issues. When dialog is suppressed, one wonders "why." As an aside, the '639 patent litigation illustrates how much money can be wasted when a simple error is not corrected.

CBS2 reports Illinois Computer Research [ICR], LLC is suing the Oprah Winfrey's Harpo Productions Inc. for patent infringement for using software related to the Oprah Book Club. The case is before Judge Matthew F. Kennelly in ND Ill, and is docket 1:08-cv-07322. Yes, Raymond P. Niro represents plaintiff-patent assignee.

If ICR sounds vaguely familiar, it should. ICR owns the rights to United States Patent No. 7,111,252 (“the ’252 Patent”). This patent was involved in the case ILLINOIS COMPUTER RESEARCH, LLC, Plaintiff and Counterclaim Defendant v. GOOGLE, INC., Defendant, and FISH & RICHARDSON P.C., Defendant, Counterclaimant and Third-Party Plaintiff, v. SCOTT C. HARRIS, Third-Party Defendant in in the UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS in 2007. The inventor of the '252 patent is patent attorney Scott C. Harris, a defendant in the noted case. Observe discussion in The Prior Art blog of Joe Mullin:

Over the weekend, I made a timeline of the Scott Harris – Fish & Richardson dispute as I reported it over the course of last year. Scott Harris, Daily Journal readers will recall, was a top-billing Fish lawyer who was given the boot after his recently sold patents were asserted in lawsuits against firm clients, including Google.

I'm going to keep an occasionally updated timeline and information page on the conflict between Harris and his former employer. It is also linked on the left hand column of my blog, under “L’Affaire Harris: Timeline.” I will expand and add to it as time goes along. The Illinois Computer Research v. Google litigation and related cases have been written about elsewhere, including extensive coverage from the anonymous Troll Tracker blog. In any case, I hope to be helpful by putting most of the key information together in one place.

As noted above, the inventor for US 7,111,252 is Scott C. Harris. The first claim of the '252 patent is

A method, comprising: in a server of a network, storing a plurality of images representing pages of a book, said images stored with a resolution effective to enable said book to be read; responsive to a request over the network, sending one of said images to a remote node; and determining if the request for pages exceeds a certain threshold, and sending said information only if said threshold is not exceeded.

The abstract states:

A system for enabling touch and feel over the internet provides a three-dimensional representation of a good being sold, that three-dimensional representation being viewable from a number of different directions. The good being sold is in a package and the package is displayed from the number of different directions. The present invention has the good being a book, and the inside and outside covers of the book are displayed and specified pages of the book can be displayed. The user can read from either the label or the covers just like as if the were actually handling the good.

A heartwarming Holocaust memoir that is to become a big-budget film has been exposed as a hoax by a Jewish survivor in Britain only weeks before it was due to be published.

Herman Rosenblat's Angel at the Fence: The True Story of a Love that Survived, tells how he met his future wife as a girl when she threw apples to him over the barbed wire fence of the concentration camp where he was held.

Oprah Winfrey, who twice invited Mr Rosenblat on to her talk show, hailed the book as “the single greatest love story ... we've ever told on air”. The still-unpublished memoir became the basis for a children's book and $25 million (£17 million) feature film, The Flower of the Fence, which is due to start shooting in March.

What’s the most creative thing you’ve seen a patent attorney do?. In one of the answers, the answerer states that it is not a patent attorney’s role to be creative and if he/she is creative…he/she should be FIRED. Agree? Disagree?

LBE posted:

It was the patent attorney at Fairchild who pushed for what became the application for the integrated circuit.

From L. B. Ebert, The Impact of World War I on Present Day Patent Issues, Intellectual Property Today, p. 35 (February, 2005)

-->Robert Noyce and Jean Hoerni had been working merely on an idea about putting a flat plane of silicon dioxide on top of silicon, but patent attorney John Ralls kept asking "What else can you do with this idea?" Noyce then realized that electrical connections could be run along the silicon dioxide, particularly connections among multiple elements, and Noyce's conception of the IC was born.

Additionally, one might ask "creative as to what"? Invention or innovation? A patent lawyer who can (creatively) foresee the innovation, and draft claims accordingly, is invaluable. A patent lawyer who mechanically drafts claims to an invention is merely a scrivener.

[Patent lawyer] Gugliotta should have known that Morano's invention could never be patented because two known concepts such as the cell phone and solar energy pad cannot be combined to obtain a new patent.

In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. (‘Consisting of’ claim language). In 2005, the Immunocept sued its patent attorneys for malpractice. On appeal, the CAFC agreed that federal courts holds exclusive jurisdiction over this case because it requires a determination of patent claim scope – a substantial patent law question.

In Air Measurement (AMT), the patent holder sued its attorney for malpractice based on a series of alleged mistakes, including filing after an on sale bar date, failing to submit two prior art references; and failing to properly inform AMT of the mistakes.

On Dec. 24, 2008, the CAFC ruled that ED Mich erred in granting patentee-Sundance's motion for judgment as a matter of law (JMOL) that the ’109 patent was not invalid AND reversed the district court’s judgment that the asserted claims are nonobvious as a matter of law AND held as a matter of law that claim 1 of the ’109 patent is invalid for obviousness

The CAFC noted:

In a decision rendered before the Supreme Court’s holding in KSR, the district court granted Sundance’s motion for JMOL, ruling that “there was not sufficient evidence for the jury to conclude that one skilled in the art would have combined Hall and Cramaro so as to arrive at the invention—a segmented tarp used for truck covers.” Sundance, Inc. v. DeMonte Fabricating Ltd., No. 02-73543, 2006 WL 2708541, at *5 (E.D. Mich. Sept. 20, 2006). In particular, the district court concluded that Hall was “prior art outside of the truck environment which used segmented tarps,” “a segmented pool cover,” and “a segmented non truck cover.” Id. at *3-4.

Footnote 1 set out an issue that was discussed in great detail in part I of the opinion, which was not about obviousness-->

Sundance objected to the admission of the testimony of Mr. Bliss on the issues of invalidity and noninfringement, arguing that Mr. Bliss was not qualified as a technical expert, but merely a patent law expert. As explained below, the district court erroneously admitted the testimony over Sundance’s objection. Note also:Mr. Bliss “was not asked to testify in general on patent office practice and procedure.” Oral Arg. 1:23-1:27, available at http://oralarguments.cafc.uscourts.gov/mp3/2008-1068.mp3

The CAFC noted-->

Admitting testimony from a person such as Mr. Bliss, with no skill in the pertinent art, serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is also a qualified technical expert, his testimony on these kinds of technical issues is improper and thus inadmissible. Because Mr. Bliss was never offered as a technical expert, and in fact was not qualified as a technical expert, it was an abuse of discretion for the district court to permit him to testify as an expert on the issues of noninfringement or invalidity.

Having smoked the use of Mr. Bliss by defendant, the CAFC got to the pointthat the "expert" didn't matter.

Thus, Part II of the decision got to the issue of considering the district court’s entry of JMOL overturning the jury verdict of obviousness.

Initially, the CAFC determined a combination of Hall and Cramaro satisfies every limitation of claim 1 of the ’109 patent and turned to whether the combination would have been obvious at the time of the invention.

KSR enters the picture: “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S. Ct. at 1742. Such a combination is more likely to be obvious where it “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement.” Id. at 1740

Contemplate the CAFC line: Secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome this strong prima facie case of obviousness. [?]

Ricoh Company won a battle in a patent fight with Quanta Computer over optical disc drives when a patent appeals court ruled on Dec. 23 that a lower court erred in tossing out Ricoh's lawsuit.

Ricoh had filed suit against both Quanta and its customer Nu Technology, accusing them of infringing its patents for optical disc drives. The U.S. District Court for the Western District of Wisconsin issued a summary judgment against Ricoh.

Ricoh appealed, and the U.S. Court of Appeals for the Federal Circuit ruled on Tuesday that the federal court in Wisconsin was correct in rejecting the suit as it pertained to two patents but "applied erroneous legal standards" to assess whether Quanta contributed to infringement of the other two.

In fact, the CAFC found the district court "got it wrong" on contributory infringement AND inducement:

Because the district court applied erroneous legal standards for assessing (1) whether Quanta contributorily infringed the ’552 and ’755 patents and (2) whether QSI induced infringement of the ’552 and ’755 patents, the district court’s summary judgment of noninfringement is vacated on these issues.

The issue on contributory infringement-->

We now turn to Ricoh’s arguments that Quanta contributorily infringed the ’552 and ’755 patents by selling optical disc drives adapted to perform the patented recording methods. The district court held that even though Quanta’s drives might be capable of being used to infringe Ricoh’s patented processes by writing discs, there was no liability for contributory infringement because the drives were also capable of “substantial noninfringing use” within the meaning of § 271(c) because they could also be used to read discs in a noninfringing manner.

The crux-->

For purposes of this appeal, we must accept as true Ricoh’s evidence that Quanta’s drives contain at least some distinct and separate components used only to perform the allegedly infringing write methods. In this posture, this case thus presents an important, and previously unresolved, question concerning the scope of liability for contributory infringement, the construction of § 271(c), and the interpretation of the Supreme Court’s decisions in Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 416 (1984), and Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

History-->

The language of the statute incorporates the core notion that one who sells a component especially designed for use in a patented invention may be liable as a contributory infringer, provided that the component is not a staple article of commerce suitable for substantial noninfringing use.

The reasoning-->

It thus follows that Quanta should not be permitted to escape liability as a contributory infringer merely by embedding that microcontroller in a larger product with some additional, separable feature before importing and selling it. If we were to hold otherwise, then so long as the resulting product, as a whole, has a substantial non- infringing use based solely on the additional feature, no contributory liability would exist despite the presence of a component that, if sold alone, plainly would incur liability.7 Under such a rule, evasion of the protection intended by Congress in enacting § 271(c) would become rather easy. A competitor who wished to sell hardware that would enable infringement of a patented process could do so without incurring liability for contributory infringement by selling a device that simply embedded the hardware for practicing the patented process within other hardware that also performs another process, or by combining the enabling hardware with other hardware before importing it.

Finally, we consider Ricoh’s claim that QSI actively induces infringement under 35 U.S.C. § 271(b), which states that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” Specifically, Ricoh claims that QSI induced infringement by its customers (e.g., Hewlett-Packard, Dell, and Gateway) as well as the end-users of the drives. The district court granted summary judgment of no inducement on the grounds that Ricoh had not presented evidence sufficient to create a material issue of fact as to whether QSI possessed the requisite intent that the patents be infringed.

The issue-->

The issue before us is whether Ricoh has introduced evidence sufficient to create a material issue of fact as to Quanta’s intent that its drives be used to infringe the method claims of the ’552 and ’755 patents. Again, we turn to Grokster and its analysis of the law of active inducement.

The errors of the district court on inducement-->

Accordingly, the district court erred to the extent that it discounted Ricoh’s evidence of QSI’s intent as failing to present evidence that QSI communicated the nature of its actions to alleged direct infringers. Similarly, the court erred in discounting evidence that QSI made a presentation to Dell, which touted the advantages of the Quanta drives, on the grounds that the presentation disclosed an algorithm rather than one of the claimed methods. The potential relevance of the presentation is two-fold. First, the presentation is relevant to the extent it indicates QSI possessed the requisite intent that its drives be used to perform the infringing methods. Second, the presentation is relevant to the issue of whether it encouraged Dell to use the drives in an infringing manner.

Prior caselaw-->

DSU Medical further relied on Grokster to reaffirm the sufficiency of circumstantial evidence to prove specific intent. Id. (“‘While proof of intent is necessary, direct evidence is not required; rather, circumstantial evidence may suffice.’” (quoting Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988))). Moreover, both DSU Medical and Grokster relied on prior decisions of this court establishing that specific intent may be inferred from circumstantial evidence where a defendant has both knowledge of the patent and specific intent to cause the acts constituting infringement.

Judge Gajarsa dissented in part:

Specifically, I disagree with my colleagues’ decision to decide the difficult issue of contributory infringement on the basis of policy concerns without due regard for the text of 35 U.S.C. § 271(c) and am of the opinion that the majority makes three errors in its analysis. First, the majority ignores the fact that Quanta does not sell or offer to sell the accused components, as the term “sell” is used in § 271(c). Second, the majority opts for an over-inclusive application of § 271(c) that directly contravenes Supreme Court guidance on how this section ought to be interpreted. Third, the conduct to which the majority objects relates to the design and manufacture of “components,” even though § 271(c) only addresses the act of selling a component.

There were obviousness issues in the case:

the parties do not dispute that the claims of the ’109 patent are presumed obvious. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (“Where a claimed range overlaps with a range disclosed in the prior art, there is a presumption of obviousness.” (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997))). This presumption, however, “can be rebutted if it can be shown that the prior art teaches away from the claimed range, or the claimed range produces new and unexpected results.” Id. at 1311 (citations omitted). The district court rejected Ricoh’s expert testimony offered to rebut the presumption, reasoning that “plaintiff . . . fails to explain how the prior art ‘teaches away’ from its ’109 patent or how the ’109 patent provides ‘new and unexpected results.’”

Of "teaching away"-->

“‘A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’” Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (refusing to conclude that prior art disclosure taught away from the claimed invention where the disclosure did not “criticize, discredit, or otherwise discourage the solution claimed”). Here, EP ’272 teaches that the recrystallization upper-limit linear speed is a physical characteristic of the particular phase change media—i.e., optical discs having a specific composition—disclosed therein. EP ’272 p.6 ll.7–9 (stating that the “‘recrystallization upper-limit linear speed’ of the recording layer of the optical recording medium is a novel value for characterizing the recording medium, which was discovered by the inventors of the present invention”).

Ricoh's '109 patent claims were obvious over Ricoh's own EP patents: Such development of the prior art is the quintessence of “ordinary skill” or “ordinary skill and common sense” rather than patentable innovation. Cf. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007).

Ricoh also lost on a method claim: Infringement of a method claim “occurs when a party performs all of the steps of the process,” BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379 (Fed. Cir. 2007), and Ricoh reads the district court’s opinion as improperly applying this standard. In particular, Ricoh argues that the use of “comprising” in the preamble, plus the indefinite article “a” to introduce “a formatting process,” indicates that an accused formatting method with one or more additional foreground steps may infringe the claims of the ’955 patent as long as at least one process begins as a background process. Although the use of “comprising” in a claim’s preamble “raises a presumption that the list of elements is nonexclusive,” the enumerated steps of a method claim must nevertheless “all be practiced as recited in the claim for a process to infringe.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007). Accordingly, even under Ricoh’s analysis, the process alleged to meet the background process limitation of claims 8–12 of the ’955 patent must itself originate as a background process.

Tuesday, December 23, 2008

The Boston-Globe reported: Dr. Reddy's Laboratories said Dec. 23 it settled a patent dispute with Schering-Plough Corp. and Sepracor Inc. over the allergy drug Clarinex.

Under the settlement, India-based Dr. Reddy's will be able to sell generic versions Clarinex-D 12 Hour, Clarinex-D 24 Hour, and Clarinex Reditabs starting in 2012.

The deal settles all pending patent infringement actions filed by Kenilworth, N.J.-based Schering-Plough and Marlborough, Mass.-based Sepracor against Dr. Reddy's in U.S. District Court for the District of New Jersey. Specific terms of the deal have not been disclosed.

**ALSO

IPFinance writes: Politically the lure of cheaper drugs by increasing the supply of generics once the brand name drugs have come off patent is tempting. The other side of the coin is, however, the reduction of the return on the investment made by the pharmaceutical companies. These depend on the cash flowing in from successful drugs to fund their future research and development. Pushing for greater use of generic off-patent drugs may mean that the US government may have to increase funds for health research to counteract the reduction in R&D dollars spent by pharmaceutical companies.

The problem is the type of research the government would fund is not necessarily the type of research most-funded in the private sector.

Of biologics-->

Currently the approval process for generic biologics is not yet established. The characteristics of biologics means that the FDA demands full testing, rather than relying on data already on file. This hurdle means that few (if any) generic biologics have been approved - and that it will be some time before generic counterparts to brand name drugs appear.

The 9-3 ruling by the appeals court in Washington against former Equitable Gas Co. executives and WeatherWise USA Inc. founders Rand Warsaw and Bernard Bilski is the latest setback in a saga dating back to the partner's original patent application for a mathematical way to manage bad weather risk by making hedged trades in the commodities market. The original patent was filed in April 1997.

"The situation is just atrocious," said a disgruntled Warsaw, who took over as president of the South Side-based company when Bilski left in 2003.

Curiously, one has:

"The original State Street patent might be reviewed based on the Circuit Court's Bilski ruling, as could Amazon.com's "One click" patent," Buchanan Ingersoll & Rooney attorney Lynn Alstadt said. "The Amazon one-click patent also might be examined."

In view of In re Bilski, 2007-1130, slip op. (Fed. Cir. Oct. 30, 2008) we must consider the statutory sufficiency of the recited claims under 35 U.S.C. § 101. Under Bilski, “the machine-or-transformation test is the only applicable test and must be applied, in light of the guidance provided by the Supreme Court and this court, when evaluating the patent-eligibility of process claims.” (Id., slip op. at 29).

Sunday, December 21, 2008

In Wheeler, a BPAI finding of anticipation was reversed and remanded for appropriate further proceedings.

The BPAI's factual findings were reviewed to determine whether they are supported by substantial evidence. See e.g., In re Berger, 279 F.3d 975, 980 (Fed. Cir. 2002), and here substantial evidence was lacking.

An important issue was the scope of review. The CAFC noted:

Our appellate review is limited to the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194, 196 (1947) (“[A] reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency. If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”).

In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court’s grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen’s claims are neither “tied to a particular machine or apparatus” nor do they “transform[] a particular article into a different state or thing.” Bilski, 545 F.3d at 954. Therefore we affirm.

Chakrabarty holds that a genetically modified bacterium is a patentable “manufacture” or “composition of matter” under section 101.

(...)

Perhaps patentee Classen Immunotherapies will seek certiorari on the ground that the Federal Circuit’s rejection of the method claim can’t be squared with Chakrabarty’s holding that a genetically modified bacterium is a manufacture . . .

IPBiz notes that one will not find the term "genetically modified" anywhere in Diamond v. Chakrabarty, 447 U.S. 303 (1980). The holding is along the lines: A live, human-made micro-organism is patentable subject matter under § 101. The entity was "a bacterium from the genus Pseudomons containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway. Joe Miller got the holding of the 5-4 case wrong. The case was about genetic engineering, not about genetic modification.

Footnote 1 of Chakrabarty is instructive:

Plasmids are hereditary units physically separate from the chromosomes of the cell. In prior research, Chakrabarty and an associate discovered that plasmids control the oil degradation abilities of certain bacteria. In particular, the two researchers discovered plasmids capable of degrading camphor and octane, two components of crude oil. In the work represented by the patent application at issue here, Chakrabarty discovered a process by which four different plasmids, capable of degrading four different oil components, could be transferred to and maintained stably in a single Pseudomonas bacterium, which itself has no capacity for degrading oil.

At the time, four known species of oil-metabolizing bacteria were known to exist, but when introduced into an oil spill, competed with each other, limiting the amount of crude oil that they degraded. The genes necessary to degrade oil were carried on plasmids, which could be transferred among species. By irradiating the transformed organism with UV light after plasmid transfer, Prof. Chakrabarty discovered a method for genetic cross-linking that fixed all four plasmid genes in place and produced a new, stable, bacteria species (now called Burkholderia) capable of consuming oil one or two orders of magnitude faster than the previous four strains of oil-eating microbes. The new microbe, which Chakrabarty called "multi-plasmid hydrocarbon-degrading Pseudomonas," could digest about two-thirds of the hydrocarbons that would be found in a typical oil spill.

Not frequently discussed is that "oil-eating" bacteria have a preference for aliphatic [sp3] carbon over aromatic [sp2] carbon. They eat the benign stuff and leave behind the toxic stuff. Roughly 2/3 (or more) of a petroleum crude is aliphatic.

The New Zealand Herald has a plagiarism piece including text relating to New Zealand plagiarist Noelle McCarthy:

Specifically in my case, for many years I have been copying Noelle McCarthy's columns and using much of the lesser-quality work as my own. If I had used the better stuff it would've been too obvious, and as apparently some of that may have already been plagiarised, it could have meant I was plagiarising twice when I only really wanted to plagiarise once. Noelle, to her credit, is a fine thinker and writer and probably doesn't need to plagiarise.

The piece ends with the line: And of course one that I may or may not have made up myself: "Creativity is great but plagiarism is faster."

IPBiz recalls an earlier IPBiz post which had the text Channel 6 tv in Orlando, FL videotaped a sign "Plagiarism Saves Time" at a Hooter's restaurant on Lake Underhill Road located across the street from Legacy Middle School, leading to its removal.

Of text in the beginning of the Herald piece I appreciate that many of you only really buy the paper for my column, so it is understandable that in many cases you may have felt a little short-changed, especially those of you who get it delivered, as you wouldn't have had any way of knowing it wasn't going to be in there., Illinois folks wanted plagiarist SIU President Glen Poshard to remain, and it looked like most US voters thought more of plagiarist, Acela-rider Joe Biden than his hockey-mom opponent. So "That Guy" in New Zealand has many role models to invoke.

Anything you take credit for saying without attribution can, but will not, be held against you. And, as the Kinnock speech matter of 1987 illustrated, you can even plagiarize your own life, and fool a lot of people.

***In passing, New Jersey radio station WMGQ (98.3) is running an ad (for employment listings) wherein a currently unhappy job holder is asked by her employer to draft an essay on Gilgamesh for the employer's child. The curious thing is that the employer is a judge, the employee a clerk. One sees this in relation to Laurence Tribe's problems with plagiarism and ghost-writing, and Alan Dershowitz's observation of law promoting a culture of plagiarism. More "role models" for "That Guy" in New Zealand!

Free Press notes: Vince Young is suing three men, including former Tiger Enos Cabell, for applying for a trademark to use his initials and "Invinceable" nickname to sell products without his permission.

"Meet the Press" seems intent on capturing a lower age demographic, unfortunately a demographic that does not watch shows like "Meet the Press".

For older folks, one has Andrea Mitchell, who demonstrated on 21 December 2008 that she can quote the US Constitution without knowing what it says. Thus, while trying to show that the Constitution forces appointment of Senate vacancies, Mitchell ignored a key part of Clause 2 of the 17th Amendment. Clause 2 states:

When vacancies happen in the representation of any State in the Senate, the executive authority of each State shall issue writs of election to fill such vacancies: Provided That the legislature of any State may empower the executive thereof to make temporary appointments until the people fill the vacancies by election as the legislature may direct.

"He also said that all the powers and responsibilities of the executive branch are laid out in Article I of the Constitution," Cheney said in a interview that was conducted on Friday. "Well, they're not. Article I of the Constitution is the one on the legislative branch."

"Joe's been chairman of the Judiciary Committee, a member of the Judiciary Committee in the Senate for 36 years, teaches constitutional law back in Delaware, and can't keep straight which article of the Constitution provides for the legislature and which provides for the executive. So I think I'd write that off as campaign rhetoric. I don't take it seriously."

Biden is set to become our first plagiarist Vice-President. While at Syracuse Law School, Biden copied, without attribution, five pages of a law review article. Plagiarism was not a big issue in the campaign of 2008.

GREG GORDON of Mcclatchy-tribune writes of Ron Ace's U.S. patent petition for what he calls the most "practical, nontoxic, affordable, rapidly achievable" and beneficial way to curb global warming and a resulting catastrophic ocean rise.

IPBiz is not sure what a patent "petition" is. [It could be a petition for accelerated examination, but Gordon doesn't say.] Inventor Ace has an issued patent US 6,688,129, titled Geothermal space conditioning, with first claim

A geothermal system, comprising: a water storage container; a heat exchanger thermally coupled with said storage container; a water inlet leading from an underground potable water source to said storage container for supplying potable water to said storage container; and a water pump connected to said water inlet for returning potable water from said storage container to said underground potable water source through said inlet.

but one suspects Gordon is talking about something else.

Gordon's comments about patenting are naive and wrong, such as A patent certifies that an invention is unique, not that it would work. Gordon apparently is unaware of the enablement requirement of 35 USC 112.

Further, contemplate the science as reported by Gordon:

The evaporating water, Ace said, would cool the Earth in multiple ways: First, the sprayed droplets would transform to water vapor, a change that absorbs thermal energy near ground level; then the rising vapor would condense into sunlight-reflecting clouds and cooling rain, releasing much of the stored energy into space in the form of infrared radiation.

The phase change of liquid water to gas-phase water requires the heat of vaporization, presumably the source of "absorbs thermal energy." The vapor pressure of gas phase water above liquid water is determined by temperature and may be calculated using the Clausius-Clapeyron equation. Once the equilibrium vapor pressure is reached, one is done, and further "spraying" will not create more vapor phase water. When the vapor phase water reaches something at, or below, the dew point, the vapor phase water condenses, releasing the enthalpy of vaporization. Water evaporates and clouds form all the time. Gordon did not discuss the energy consumed to spray the liquid water relative to the incremental enhancement in water vapor.

Gordon also wrote:

Kenneth Caldeira, a climate scientist at the Carnegie Institution's Department of Global Ecology at Stanford University, roughly simulated Ace's idea in recent months on a model that's used extensively by top scientists to study global warming.The simulated evaporation of about one-half inch of additional water everywhere in the world produced immediate planetary cooling effects that were projected to reach nearly 1 degree Fahrenheit within 20 or 30 years, Caldeira said."In the computer simulation, evaporating water was almost as effective as directly transferring ... energy to space, which was surprising to me," he said.

(...)

David Travis, a University of Wisconsin-Whitewater professor who's studied clouds extensively, praised Ace's innovation, but said he's "generally opposed to geo-engineering" solutions and can't imagine evaporating water on a large enough scale to have a near-term effect.

Caldeira, who plans to submit his computer findings for peer-reviewed publication, is among scientists so concerned about sluggish progress in curbing greenhouse gases that they met last year to consider geo-engineering options.

One thing is certain: Ace is dead serious. He's tenaciously compiled more than a thousand pages of research, sometimes during all-night binges despite a fight with cancer. He said he's invested large sums in patenting his global-warming inventions.

Gordon also wrote: Ace's invention looks less loony when compared with some others. NASA scientists conceived the multi-trillion-dollar idea of orbiting megaton mirrors in space to deflect sunlight. Other scientists have proposed reflecting solar energy by placing mirrors on thousands of high-altitude balloons, by foaming the oceans' surfaces or by filling the upper atmosphere with tiny sulfates or inert particles, or by adding water droplets to low-level ocean clouds from 1,500 unmanned boats.

Although the USPTO has no experimental facilities and does not review data, Gordon wrote: "I never saw myself making a dime on it," said Ace, who said he'd donate his patent to the U.S. government if he gets one. "It's mostly that the data seemed to be incorrect, and I wanted to know what is right."

I was so impressed that you still knew Clausius-Clapyron, I knew you had things well in hand. And yes, what an idiot, looking at one half of the issue (only evaporation). Why, if he had looked at the other half, he would have seen global warming!

***Of previous erroneous pronouncements from Stanford profs, recall Baker on Proposition 71/CIRM and Rosenberg on "transistors only for hearing aides" (the latter involving a phantom citation and discussed in 8 JMRIPL 80)

As regards global warming, my view is essentially the same as yours: Anthropogenic Global Warming (AGW) is a scam, with no basis in science.

It is obvious that anthropogenic global warming is not science at all, because a scientific theory makes non-obvious predictions which are then compared with observations that the average person can check for himself. As we both know from our own observations, AGW theory has spectacularly failed to do this. The theory has predicted steadily increasing global temperatures, and this has been refuted by experience. NOW the global warmers claim that the Earth will enter a cooling period. In other words, whether the ice caps melt, or expand --- whatever happens --- the AGW theorists claim it confirms their theory. A perfect example of a pseudo-science like astrology.

Saturday, December 20, 2008

In Europe, Article 84 requires the claims to be "clear, concise and supported". After issue, the claims as granted is immune to Art 84-based attacks, until the patent owner seeks to amend. Then, the content of the amendment is fair game for Art 84-based attacks. I think this scheme keeps the show on the road, by encouraging Applicants to go to issue with impact-resistant claims. The USA can scrutinise the last 30 years of operation of the EPC, take what makes sense and disregard the rest, and I think Dennis, the USPTO and the CAFC sometimes look wistfully at Europe, but can't bring US opinion round to an open mind on borrowing good stuff from Europe.

Of the matter of supported-->

from the guidelines for examination part C:

"11.10 Arguments and evidence submitted by the applicant

The relevant arguments and evidence to be considered by the examinerfor assessing inventive step may either be taken from the originally-filedpatent application or submitted by the applicant during the subsequentproceedings (see 11.7.2 above and VI, 5.3.4, 5.3.5 and 5.3.7).Care must be taken, however, whenever new effects in support ofinventive step are referred to. Such new effects can only be taken intoaccount if they are implied by or at least related to the technical probleminitially suggested in the originally filed application (see also IV, 11.7.2,T 386/89, not published in OJ, and T 184/82, OJ 6/1984, 261).

Example of such a new effect:

The invention as filed relates to a pharmaceutical composition having aspecific activity. At first sight, having regard to the relevant prior art, itwould appear that there is a lack of inventive step. Subsequently, theapplicant submits new evidence which shows that the claimed compositionexhibits an unexpected advantage in terms of low toxicity. In this case, it isallowable to reformulate the technical problem by including the aspect oftoxicity, since pharmaceutical activity and toxicity are related in the sensethat the skilled person would always contemplate the two aspects together.The reformulation of the technical problem may or may not give rise toamendment or insertion of the statement of the technical problem in thedescription. Any such amendment is only allowable if it satisfies theconditions listed in VI, 5.3.7. In the above example of a pharmaceutical composition, neither the reformulated problem nor the information ontoxicity could be introduced into the description without infringingArt. 123(2)".

The Patent and Trademark Office is "an agency in crisis" that will face significant challenges in the Obama administration due to a 750,000-application backlog and other internal inefficiencies, a report by the U.S. Chamber of Commerce warned Friday [Dec. 19}.

Of the proposal of deferred examination:

However, the report notes that such a system could create additional uncertainty because rivals would wait longer before deciding whether they could safely market new products.It might also be unfair to shift to competitors, as some deferred programs do, the burden to pay for and initiate a proceeding for someone else's application. Furthermore, the proposal could increase patent lawsuits because parties who have invested in new products may be more willing to litigate, the report states.

Rick Merritt of EETimes wrote: The report notes that from 1988 to 2008 the backlog at the patent office has grown from 268,000 to 750,000 applications. Waiting time for action on an application has stretched from 20 to 32 months over the same period.

Meanwhile, the patent office now employs more than 9,000 people, many of them with less than five years experience examining patents. From 2002 through 2006 the office lost one examiner for every new hire, the report said.

The PTO cannot achieve organizational excellence without the strong leadership and executive management capabilities of the incoming under secretary and director. Accordingly, that individual must be an experienced, highly respected leader in whom the Congress and the intellectual property, business, and international communities can place their full conﬁ dence. Equally important, the appointment of a top-caliber, knowledgeable intellectual property executive offers the potential to reinvigorate the public/private partnership that has worked well in the past.

Continuing applications were discussed:

RCE ﬁlings have increased from 8.3% of total ﬁ lings in 1998 to 19.6% in 2007. This increase contributes to the backlog of applications to be examined at the PTO and the increase in average time of pendency. Reducing the need to ﬁle RCEs would have a positive impact on PTO backlogs and reduce prosecution costs. The PTO should analyze the cause of this increase in RCE ﬁlings from both an internal and external perspective. Internally, the PTO should consider altering the current examiner incentives to seek additional production credits by extending prosecution through RCE ﬁlings and encourage early resolution of patentability issues, including credit for prosecution after ﬁnal rejection. Externally, the PTO should consider addressing current applicant practices that lead to extended prosecution and increased RCE ﬁlings. Continuation Practice PTO should consider whether it would be desirable to limit the time period for presenting broadened claims in continuation applications so that the public would have increased certainty in understanding the scope of patent protection ultimately granted to a patent family.

One of the major flaws in Lemley's "Ending Abuse..." was the failure to recognize that the prime driverfor continuing applications was things rectifiable by RCEs, rather than by continuations. The filing of many RCEsindicates flaws in examination, not attempts to "after-cover" products of competitors. Lemley got it wrong.

This is a main cause of the backlog, because examiners don't want to allow stuff for fear of getting in trouble. So applicants are forced to file RCE after RCE tying up the examiner's time. I've had numerous examiners tell me that they wanted to allow my case, but couldn't because their SPE told them not to and that SPE's get in trouble if their art unit issues a "bad patent." Thus, the fear of issuing "bad patents" is now crippling the USPTO.

Bad patents can be addressed via reexamination. If anything, the reexamination process should be streamlined to take 6 months instead of 2-3 years. Thus this is a step towards the "gold plated patent" that Gene talked about previously. But not quite as radical. Thus, the USPTO should go back to the old practice of not penalizing examiners and SPES for allowing patents, and thus patents can be granted again after just one amendment, reducing the backlog. If someone has a problem with an issued patent, they file for a reexam (which ideally should be completed in 6 months), upon which the patent can then be litigated.

In other words the final version is much less forthright about the significance of Jon Dudas’s successor than was the draft. I wonder why this is. It is worth remembering that the authors of the report are all very high-profile members of the patent community. Two of them – Todd Dickinson and Herb Wamsley – though contributing in a personal capacity are the executive heads of the organisations that represent US IP practitioners and owners, the AIPLA and the IPO respectively. Clearly, it would be slightly uncomfortable, to say the least, if the new director of the office did not tick all the qualification boxes the report identifies and the two of them were on the record stating: “We believe that the single most important way to establish the incoming administration’s credibility is through the appointment of a skilled leader who possesses these qualifications … .” Do they possess some inside knowledge about the identity of the new director, or is it just a case of not wanting to leave a hostage to fortune?

Using the appointment of Chu to head DOE as a touchstone, IPBiz predicts Barack Obama will appoint someone as Director who has significant patent experience.

***One commenter to a Dec. 23 post on Patently-O wrote:

Deferred examination "for perhaps up to three years" -- this is what applicants already get.

BTW -- if the USPTO promulgates rules (or Congress passes a law) which create a requirement for an "enhanced IDS," then I doubt any application will want to have examination deferred.

Once an applicant has gone through the trouble and expense of preparing both the application and enhanced IDS, the cost of examination is just a small part. Once application is already in for $10K-$20K, they might as well go all in.

Today’s San Jose Mercury News — the newspaper of Silicon Valley — features a guest editorial by Wirt Cook, IBM vice president and senior state executive, on the proposed Patent Reform Act, titled “Patent Reform Act best way to protect, foster innovation”:

Berman’s bill will enable private-citizen-experts to help patent examiners research the novelty of proposed patents so that they can make a more informed decision. The bill will also create a framework for individual inventors or businesses to dispute the validity of a patent without the expense and time of a courtroom litigation.

I’m no patent expert, but this does sound good. The real experts — Ted Sabety, Mark Lemley, and more recently Larry Lessig — have been raising patent issues as problematic for nanotechnology. —Christine

The "framework" in question was "oppositions" or post-grant review [PGR]. In "Patenting Nanotechnology," Lemley proclaimed Gary Boone to be the inventor of the integrated circuit. Guess that makes him an expert. Sabety has an article: "The Doctrine of Inherency and the Carbon Nanotube Patents: Experimental Measurement vs. Documentary Inference."

Of --Thus this is a step towards the "gold plated patent" that Gene talked about previously--, the discussion by (now President-Elect) Obama of gold-plated patents mentioned by Gene was a recycling of a proposal by Mark Lemley and others.

See for example:http://ipbiz.blogspot.com/2007/08/gold-plating-patents-been-there.htmlhttp://www.iptoday.com/articles/2008-11-ebert.asp

A variant of the Intellectual Property Today article had been submitted to IPFrontline, who refused to publish it.

There also appears to be some confusion about what it is that law professors do. I suspect that the current scholarly output of the legal academy is heavily weighted towards normative scholarship rather than describing what the law is or predicting what courts will do.

Or opining on non-existent articles in the 1947 New York Times? [8 JMRIPL 80]

If President-Elect Obama is receiving guidance from Rai on patent matters or on who to appoint to run the Patent Office we are all in deep trouble. It was Rai, along with fellow Obama advisor Mark Lemley, who is a Professor of Law at Stanford Law School, that spearheaded the filing of the Amici Curiae brief of eleven intellectual property law professors in support of the Patent Office position in the GlaxoSmithKline and Tafas challenge of the claims and continuations rules. How anyone who knows anything about patent law or patent practice could support the claims and continuations rules is puzzling, but the unfortunate truth is that law professors do not know anything about practicing law so their viewpoint is obviously one without experience.

What does one expect from someone who relies on a non-existent NYT article for his patent policy?

***Comment to Patently-O on 14 Feb 09-->

Of --He was PTO director under Clinton and before that was a partner at the Howrey firm.--, Dickinson was at Howrey after his time at the USPTO. He is now on the USPTO roster.

Friday, December 19, 2008

New England College [NEC] sued poet Anne Marie Macari and New Jersey's Drew University for theft of a college program, specifically a Master’s of Fine Arts in Poetry program. [In passing, this is the kind of suit that Texas A&M might have filed against Wender and SIU, but didn't].

A WiredPR news release observed: Macari was previously employed by NEC, a Henniker, New Hampshire based liberal arts school, before becoming a program director at Drew. She was stated to have failed to meet her obligations during the latter part of her employment at the institution, using work hours to create the identical NEC program for the New Jersey based Drew University. NEC reportedly sent a request to the school asking them not to launch the stolen program, which they plan to begin in January. The request was refused.

UPDATE. from http://www.nhbar.org/publications/archives/display-news-issue.asp?id=5008

Drew University, an out-of-state defendant, moved to dismiss the complaint against it for lack of personal jurisdiction. The plaintiff objected, arguing that conduct that can be attributed to Drew University resulted in the plaintiff’s in-forum injury. Alternatively, the plaintiff requested leave of court to conduct discovery on the issue of personal jurisdiction. Concluding that the plaintiff made a colorable (yet not sufficient) case for the existence of in personam jurisdiction, the court denied Drew University’s motion without prejudice and granted the plaintiff leave to conduct limited jurisdictional discovery. 11 pages. Judge Joseph N. Laplante.

A Dec. 18 press release had noted: ConvaTec, a world-leading developer and marketer of innovative medical technologies for community and hospital care, announced today it has signed a long-term global exclusive license agreement with Boehringer Technologies to market and distribute Boehringer's Engenex(R) Negative Pressure Wound Therapy (NPWT) System incorporating Bio-Dome(TM) Interface Technology.

Thursday, December 18, 2008

The CBS show "Eleventh Hour" on Dec. 18 [ Agro, a re-broadcast] depicted biotech work gone bad at the fictional University of California/Fillmore. The "buying" of academic research by industry also came in. Recombinant DNA work involving venom from scorpions was involved.

Dr. Hood [Rufus Sewell] even made a comment about a near IR spectrum.

At the end of the day, the company had tried to do the right thing (destroying the flawed recombinant material) but a small farmer obtained some of it. The academic committed suicide.

Dialog in the show suggested "green food coloring" was a petroleum product, triphenyl methane. In the real world commercial green food coloring is made by combining FD&C Yellow 5 and and FD&C Blue 1. Yellow 5 is tartrazine, C16H9N4Na3O9S2, 1934-21-0, an azo dye, which does comprise two phenyl groups. Blue 1 has formula C37H34N2Na2O9S3 (and is also termed Patent Blue AR) and does comprise a carbon bound to three phenyl groups, but comes from coal tar, not petroleum. Additionally, home fragrance spray was stated to contain formaldehyde and benzoic acid was stated to be in other things.

The show also mentioned red coloring, carmine, derived from cochineal insects.

R. Lee Ermy guest stars here as Bob Henson - a farmer who used organic pesticides on his crops. Pesticides that his son stole from the waste dump where he worked. Pesticides that were dumped there by a giant Agricultural technologies firm, Aeonium, after it was discovered that the scorpion venom they used in it was toxic when combined with food coloring made from insects. Through all of this, we get to learn about the family farms' struggle against giant corporate farms, the greed of global agro-business firms and genetically modified foods.

Of recent textIn today's online social media world, businesses of all shapes and sizes must actively participate in online reputation management, IPBiz thought of various back-and-forths on blogs as better examples of "reputation management" than examples from business. For example, a criticism on truth on the market:

Does it bother you to lie like this? Adam Smith was talking about paper currency versus specie, not about preventing commercial banks from owning investment houses.

Credit default swaps are still not tanking. The housing market did not collapse until Fannie and Freddie, the GSEs, did.

So much for a blog with “truth” in the title.

evoked a quick response:

Lie? With all due respect, if you read it again you’ll see that’s not the message of the post.

A much faster response than LBE ever received from the Homewood Suites. The nonresponse in the latter case hardly is an example of the only way to control what people say about your company is to be part of the conversation.

***In passing, note also the various responses of IPBiz to "Masnick-isms"-->

http://ipbiz.blogspot.com/2008/12/techdirt-on-patent-reform-on-dec-15.html [Mike, at TechDirt, made comments below, but provided no citations to back up his statements.(...)]

http://ipbiz.blogspot.com/2008/04/patent-reform-2008-as-house-of-mirrors.html [It's self-evident that Mike confused what Jon Dudas said [more bad applications lately but, don't worry, we are rejecting them] with what Jaffe and Lerner said [USPTO and courts are allowing bad (issued) patents]. Jon Dudas is definitely NOT saying the USPTO is approving tons of bad patents, which IS what Jaffe and Lerner were saying. ]

FreePatentsOnline.com (FPO) has launched an informational site, www.citepatents.com, to help bloggers, journalists and others easily reference patent information, and to provide a free patent search box for adding to websites with a single mouse click.

Due to an impartial, peer-reviewed nature, patents are an important, frequently cited source of highly detailed, accurate technical information. Patents are uniquely powerful in citation; any writer on the web who refers to a patent with a hyperlink is footnoting a highly-credible document.

A post by Eva Domínguez makes reference to the concept of "innocent plagiarising":

Innocent plagiarising happens frequently on the Internet, especially with visual material. Who hasn't taken photographs for school projects, professional presentations or for family occasions that can now be seen on the web?

This evokes the "inadvertent plagiarism" concept advanced by the folks at SIU in the Poshard matter.

The post on "The Fourth Bit" included the text:

This is what happened to this year's winner of the San Jorge poster competition in Caceres who took the image of a dragon from a free web without knowing that it belonged to a famous illustrator. The winner considers that there was no plagiarism because he worked on the image. Collage as a creative method ends up blurring the borders between the original and the creative composition. Is the poster original or a simple plagiarism? How would it have been regarded if the true origin of the dragon were known?

This sort of thing implicates copyright rights in derivative works, as mentioned in the U.S. in 14 USC 106. One can find a relevant discussion concerning derivatives of the Mona Lisa (La Joconde), showing that the issue came up long before the internet, collage culture, or mashups.

And, recall the words in the Harvard Business Review: Plagiarize with pride.

We study the dynamics of fermions on graphene (...) Special emphasis is given to the formation of hydrino like states and its lifting of degeneracy due to the presence of AB field. The flux of the AB field can be tuned to make the low angular momentum hydrino states stable against decay.

See also

Bob Park flails BlackLight with quote from Chu [In 2000, Chu, along with other Nobel Prize winning physicists, was asked by a reporter about people investing in BlackLight. Chu's response was not as colorful as some. "I feel sorry for them," he said softly.]

http://ipbiz.blogspot.com/2006/03/financial-times-endorsing-hydrino.html [Dr. Michio Kaku, a theoretical physicist based at City University of New York, adds that "the only law that this business with Mills is proving is that a fool and his money are easily parted."]

Wednesday, December 17, 2008

Mondaq has an article on the "gold-plating" of patents that adds a Canadian twist:

The gold-plating of patents is but one aspect of a more extensive proposal to address a certain type of litigation largely confined to the U.S., to restore some balance. There would be no need for any "plating" of Canadian patents.

Yet Canadian law has not reached the correct balance either. The absence in Canada of any meaningful presumption of patent validity is unsatisfactory. The Canadian Intellectual Property Office (CIPO) examines over 28,000 patent applications annually.

For the 2006/2007 financial year, CIPO's expenditures amounted to almost $130 million, 78 percent of which related to patents.

Canada has more than 580 certified patent agents, a large proportion of whom spend much of their time prosecuting Canadian patent applications. Prosecuting a single application takes years and often costs more than $10,000 in professional services.

If Canadian courts give no deference to the prosecution and CIPO's allowance of patent applications, why spend such sizable resources on patent prosecution? Canada may not need gold-plated patents, but some plating would be reasonable.

IPBiz notes that in a re-examination, in the US, there is no presumption of validity, and the preponderance of evidence standard applies.

The Mondaq article is by Vincent M. De Grandpré, published Dec. 2, 2008.

Mondaq also has an article which states: In a rare precedential opinion, the U.S. Patent and Trademark Offices Board of Patent Appeals and Interferences (BPAI) recently affirmed the position stated in the Manual of Patent Examination Procedure (MPEP) that the critical date, used for determining whether a reference is prior art, reaches back to the filing date of an underlying provisional application.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.